Obvious Innovation at the PTAB
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
5d ago
Eight references were combined to reject this slick process for serving up prepackaged ice-cold beverages with ice already in the bottle. According to their website, the applicant Kukki Cocktail (www.kukkicocktail.com/) markets unique “long-lasting cold and less watery cocktails” where the ice “stays frozen for well over half an hour, no matter how sunny the summer day.” With summer approaching, the appeal is clear. The case is appeal 2024-000660, application 16/063,918. Claim 1 on appeal is reproduced below (emphasis added for the primarily disputed limitation on appeal). For context, the in ..read more
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Parsing Claims to A Controller with "Configure to" Language
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2w ago
In patent applications reciting a controller configured to carry out certain processing steps, there is substantial variation on whether, and to what extent, the claimed processing steps should be given patentable weight by US examiners during prosecution. See our previous post here. There are different ways in which examiners can try to avoid having to find prior art to apply to the claimed processing steps in the above claim structure. A first out is for the examiner to assert that the prior art structure is capable of performing the same function recited in the claim. Here, the examiner may ..read more
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Patent Prosecutor or Music Producer?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
I never had any idea what a music producer’s job was, but the title sounded pretty cool. Here is how one website describes the job: Essentially, the music producer oversees all aspects of the creation of a song or album. These can include choice of song, choice of musicians, instruments and vocalist(s) and how those instruments are played and those notes sung as well as where the song or album is recorded. Like a director is to a film, the music producer is to a song. When people ask what a patent professional actually does, sometimes it sounds a lot like being a mere scrivener… or maybe som ..read more
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Interplay between Obvious to Try and Routine Optimization
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
1M ago
Examiners can sometimes make rejections that blend together different rationales. This can be troublesome for multiple reasons. First, it can be confusing to applicants as they are unsure of the actual basis for the rejection, which in turn forces the applicant to make guesses while addressing multiple different legal rationales simultaneously. Second, it leaves the record unclear for the public in understanding how, if at all, the applicant’s arguments may affect ultimate claim scope, such as via prosecution history estoppel. Here, we see an example for an innovation in footwear from Under Ar ..read more
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Using Provisional Filing Dates Offensively - It's Not Automatic
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
USPTO examiners will take a liberal view of written description requirements when it suits their rejection, particularly when they need to find support in a priority document because only the priority document qualifies as prior art. Appeal 2024-001531, Application 17/626,453, to Bridgestone relates to an invention for a tire manufacturing system.  Claim 1 recites:  1. A system to manufacture a tire, the system comprising: one or more processors and a memory, the memory configured to store instructions that are executable by the one or more processors and cause the one or more proce ..read more
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Claim interplay under the Broadest Reasonable Interpretation (BRI)
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
2M ago
The interplay between independent claims and dependent claims can have a substantial affect on claim interpretation. Most discussed is the issue of claim differentiation, where for example a more specific feature in a dependent claim is used to justify an interpretation in the independent claim that is in some way broader that the dependent claim’s specific feature. But that is not the only way in which dependent and independent claims can impact one another. This post reviews a patent application from Soundhound related to speech processing. In this case, the dependent claims are used to just ..read more
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Where Does It End?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
The USPTO’s data (here) on Office actions over the last two years confirms that Section 101 rejections are continuing to increase at a rate of approximately 15% year over year from the beginning of 2022 to the end of 2023. At the same time, the legal analysis to apply the so-called “test” to a given case remains fraught with uncertainty and ambiguity. Almost any claim can be picked apart and found too abstract, especially when most of the analysis under Section 101 is akin to arguing about how many angels can dance on the head of a pin. A recent case on appeal at the USPTO shows that the PTAB ..read more
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Are Smartphone Apps Protectable With Utility Patents?
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
The smartphone platform, with its built-in sensors, processing power, display, and portability, opened up a whole world of new software tools that now impact our daily lives. Through apps, a smartphone becomes a level, a voice recorder, an alarm clock, an airline boarding ticket, and on and on.  Most people today use hundreds of apps without ever thinking twice. But can one use utility patents to protect new and non-obvious features encapsulated in a smartphone app? According to various sources on the internet, the resounding answer is “YES” (with the usual caveats). And in theory, this a ..read more
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But That's Not In Your Claim
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
3M ago
When arguing against a rejection, it can be helpful to put the invention in context and explain technical problems solved by the invention. This approach can often lead naturally to discussions of how the cited prior art is unable to solve such technical problems, or how the state of the art is deficient in various applications. Such explanations can help the reader better appreciate the invention by understanding how it affects and improves the real world and perhaps even society. When viewed correctly, the understanding that comes about in this way can be powerful and persuasive. Unfortunate ..read more
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All Functional Language Is Not Necessarily Created Equal
Mr. IP Law | Your inside perspective on Intellectual Property
by John Russell
4M ago
Functional language is used by many applicants. See a previous post here discussing some of the issues around terms like “configured to” and ‘adapted to". However, applicants should be aware that at least some PTAB judges consider that there is a difference in scope between such terms. Specifically, a recent case, discussed below, was decided solely on this basis. The case (Appeal 2023-003258, Application 17/172,951) relates to a camera monitoring system. Claim 1 on appeal utilized “configured to” language. For example, the claim required “at least one controller configured to” carry out vario ..read more
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